News

12 September 2017 Update on Clinical Trials Legislative Reform Order You may have heard that there are plans in place to broaden the scope of exceptions to infringement in the UK Patents Act in relation to clinical trials and health technology assessment. These changes are intended to bring UK legislation more in line with some other EU member countries, for example to exempt infringement by clinical trials of innovative drugs... Read more

12 September 2017 EPO’s Enlarged Board of Appeal to Consider Extent of Clarity Examination of Amendments in Opposition Proceedings One of the EPO’s Technical Boards of Appeal have recently referred questions to the Enlarged Board of Appeal relating to the extent to which amendments incorporating features from dependent claims are open to examination for clarity. The referral is pending as case number G 3/14. Under Article 84 EPC, claims are required to be clear and concise and to be... Read more

12 September 2017 Computer-Implemented Inventions: U.S. Supreme Court Decision in Alice v. CLS Bank The US Supreme Court recently handed down its decision in Alice v. CLS Bank. This decision relates to the patent-eligibility of computer-implemented inventions. The decision makes it clear that computer-implemented inventions can be patentable, but builds on other recent decisions of the Supreme Court to arrive at a test to determine when that is the case. Although it will take... Read more

12 September 2017 1 October 2014 Changes Coming into Effect Following the IP Act 2014 With immediate effect (1 October 2014), the first set of changes to designs law in United Kingdom brought about by the United Kingdom Intellectual Property Act 2014 have been implemented. These include changes dealing with presumed design ownership, the protection afforded to a prior user of a design in the case of an alleged infringement and, criminal provisions dealing with... Read more

12 September 2017 European Patent Office amends Rule 164 of the European Patent Convention to allow a further search of previously unsearched subject matter in European regional phase applications Rule 164 EPC is amended with effect from 1 November 2014 to allow a further search of previously unsearched subject matter in European regional phase applications (E-PCT applications). The change is particularly welcomed by applicants, for whom the previous system was generally considered unfair. Under previous Rule 164 EPC, whether or not the European Patent Office (EPO) acted as International... Read more

12 September 2017 Proposed New Rules May Limit Scope and Duration of UK Patent Box Regime The UK Government has issued a joint statement with the German Government to the effect that the OECD Forum on Harmful Tax Practices (FHTP) has developed proposals for new rules which may limit the scope, and possibly the duration, of the UK Patent Box regime. The proposed approach “seeks to ensure that preferential regimes for intellectual property require substantial economic... Read more

12 September 2017 World Trademark Review 1000 2015 J A Kemp maintained its ranking as a leading UK trade mark attorney firm in the 2015 edition of World Trademark Review 1000. The directory commented that J A Kemp ‘s style isrefreshingly open and approachable, coupled with super-efficient service.They are a top-notch firm in all things trademark. Their service really adds value, as they provide solid substantive analysis and... Read more

12 September 2017 EPO Enlarged Board Gives Its Opinion on Clarity in Opposition The EPO’s Enlarged Board of Appeal has issued its decision in Case G3/14 limiting the extent to which EPO Opposition Divisions and Boards of Appeal should consider clarity following amendments made in Oppositions. The Board has confirmed that the claims of a patent may be examined for compliance with the requirements of clarity (Article 84) EPC only when, and then... Read more

12 September 2017 EPO Enlarged Board Rules on Patent-Eligibility of Plants in Tomatoes II and Broccoli II Cases On 25 March the EPO’s Enlarged Board of Appeal issued its decision in the so-called “Tomatoes II” and “Broccoli II” cases (G2/12 and G2/13), which relate to the patent-eligibility of plants under Article 53(b) EPC. For policy reasons, Article 53(b) EPC prohibits the patenting of plant and animal varieties and essentially biological processes for the production of plants and animals.... Read more

12 September 2017 EPO Enlarged Board of Appeal Rules on Examination of Clarity of Amendments The EPO Enlarged Board of Appeal has ruled on the extent to which amendments made in EPO Opposition (and Opposition Appeal) proceedings may be examined for clarity, conciseness and support. They confirmed that compliance with Article 84 EPC may be examined only when, and to the extent that, the amendment introduces non-compliance with this article. In particular an amendment which... Read more

12 September 2017 Agreement Reached on Unitary Patent Renewal Fees The Select Committee of the Administrative Council of the European Patent Office (EPO) endorsed on 24 June the so-called True Top 4 proposal tabled by the EPO on renewal fees applicable to the unitary patent. At the meeting held in Munich by the EPO and the EU Member States participating in the unitary patent, the proposal was adopted with the... Read more

12 September 2017 Eight Ways for US Applicants to Save Money on EPO Regional Phase Applications 1. Avoid claims fees The EPO charges 235 EUR for each claim over the 15th and 580 EUR for each claim over the 50th. Very few applicants actually pay these fees. A set of reduced claims numbering no more than 15 claims can be filed to avoid claims fees completely. This can be done on regional phase filing or in... Read more

12 September 2017 AG Opinion in C-471/14: Supplementary Protection Certificate (SPC) Term Both the term of an SPC and the deadline for applying for an SPC may be set by the date of the first Marketing Authorisation for a product. An issue has arisen since many Marketing Authorisations have two dates associated with them: the date of the Marketing Authorisation itself and the (later) date on which the Marketing Authorisation is notified... Read more

12 September 2017 CJEU Follows AG Opinion in C-471/14: Supplementary Protection Certificate (SPC) Term Both the term of an SPC and the deadline for applying for an SPC may be set by the date of the first Marketing Authorisation for a product. An issue has arisen since many Marketing Authorisations have two dates associated with them: the date of the Marketing Authorisation itself and the (later) date on which the Marketing Authorisation is notified... Read more

12 September 2017 EPO Changes PACE from 1 January 2016 The EPO has recently issued a notice concerning the accelerated prosecution procedure – PACE (EPO notice can be foundhere). There are some important modifications that will come into force from 1 January 2016. One key difference is that it will now be possible to request PACE only once during the search procedure and only once during the examination procedure. This... Read more

12 September 2017 EPO to Increase Official Fees from 1 April 2016 The European Patent Office (EPO) have announced that the official fees charged for European patent applications will be increasing from 1 April 2016. Although some official fees remain unchanged, most are increasing by around 1-2% (which is a relatively small increase compared to those introduced by the EPO in the past). More details of the fee increases can be found... Read more

12 September 2017 EPO Announces Changes Regarding Examination Fee Refunds The EPO has announced that, from 1 July 2016, a 100% refund of the examination fee will be available if an application is withdrawn, refused or deemed to be withdrawn before the examining division has started substantive examination. Previously, only a 75% refund was possible under these circumstances. Further, the EPO intends to issue a communication at least two months... Read more

12 September 2017 EPO Plans to Increase Appeal Fee Significantly from 2018 The Administrative Council of the EPO recently agreed to proposals from the President of the EPO concerning reform of the Boards of Appeal of the EPO. An announcement from the EPO regarding the proposals that were passed can be foundhere. The majority of the reforms that will be enacted in due course will result in few, if any, practical changes... Read more

12 September 2017 Changes to be Made to UK Patents Rules The UK Intellectual Property Office has announced that various changes will be made to the Patents Rules, following conclusion of a public consultation. The Government ‘s response to the consultation which outlines the changes to be introduced can be found here. The changes are generally aimed at relaxing formalities and clarifying procedures. One particular change of note which will impact... Read more

31 August 2017 UKIPO Invites Comments on the Latest CJEU Referral for SPCs The CJEU has invited EU member states to file observations on the referral by the English High Court in Abraxis Bioscience LLC v The Comptroller General of Patents. This case was previously reported in our news item of 27 January 2017 and considered in more detail in our related briefing. The question referred to the CJEU reflects the lack of... Read more

31 August 2017 Lithuania Becomes the Fourteenth State to Ratify the Agreement on the Unified Patent Court (UPC) On 24 August 2017, Lithuania became the fourteenth country to deposit its ratification of the UPC Agreement with the EU Council. The full list of countries which have deposited their ratification of the UPC Agreement is now as follows: Austria, Belgium, Bulgaria, Denmark, Estonia, France, Italy, Lithuania, Luxembourg, Malta, Netherlands, Portugal, Sweden and Finland. The status of the UPC Agreement... Read more

3 August 2017 EPO Applies Doctrine of Plausibility to Small Molecule Pharmaceuticals – T 488/16 In Decision T 488/16, the Boards of Appeal of the European Patent Office have revoked EP1169038, which protected the blockbuster protein tyrosine kinase (PTK) inhibitor dasatinib (Sprycel®). The only request on file – a single claim directed to dasatinibper seor a salt thereof – was found to lack inventive step in view of the absence of evidence in the application... Read more

3 August 2017 Estonia Becomes the Thirteenth State to Ratify the Agreement on the Unified Patent Court (UPC) On 1August 2017, Estonia became the thirteenth Member State to ratify the Unified Patent Court Agreement (UPCA). The UPCA will come into effect on the first day of the fourth month after both the UK and Germany have ratified the Agreement. The process for ratification by the UK is underway. If this proceeds as expected, the final major obstacle to... Read more

2 August 2017 Changes to the Indian Patent Rules in effect from 16 May 2016 Amendments to the Indian Patent Rules were issued and came into effect on 16 May 2016. The key changes of relevance to most applicant companies active in India are set out below. Amendment of claims on national phase entry.It has not until now been possible to file any claim amendments on Indian national phase entry. Under the new rules, this... Read more

2 August 2017 Morocco to Allow Validation of European Patents as National Patents It has been announced that it will be possible, from 1 March 2015, to validate European patents in Morocco. This development marks the culmination of an agreement between the European Patent Office (EPO) and Moroccan Industrial and Commercial Property Office (OMPIC) first signed in 2010. Morocco will not be a member of the EPC, nor a so-called extension state. Instead,... Read more

2 August 2017 Good News: The European Patent Office Repeals Another Unpopular Rule The EPO administrative council meeting last week was the scene of not one but two rule changes by the EPO. Firstly, as J A Kemp reported last week, the EPO is set to repeal the unpopular 24-month term for filing divisional applications. Secondly, it has emerged that the administrative council also voted to repeal the ban on performing extra searches... Read more

24 July 2017 The Notional Business Person – A New Actor on the IP Stage? In two Decisions published on 27 April 2017, EPO Technical Board of Appeal 3.5.01 has given valuable guidance on the treatment of inventions that implement business methods and given rare positive verdicts on two related applications.  In the process, the Board has introduced the “notional business person” whose hypothetical actions need to be considered alongside the venerable “person skilled in... Read more

24 July 2017 Germany progresses Towards UPC Ratification Shortly after 1.30 in the morning of Friday 10 March, the German Bundestag unanimously passed, without amendment, a first Bill which enables Germany to ratify the Protocol on Privileges and Immunities of the Unified Patent Court (UPC) and a second Bill which authorises ratification of the UPC Agreement. This is a further key step in bringing the UPC into effect.... Read more

24 July 2017 Intellectual Property (Unjustified Threats) Bill Passed by Parliament The House of Commons passed a Bill yesterday amending provisions relating to unjustified threats to bring proceedings for infringement of patent, trade mark and design rights. The amended legislation can be enacted into the UK’s national law following royal assent. Full details of the amended provisions can be found here. The amendments follow a Law Commission project to simplify and... Read more

24 July 2017 UK Triggers Article 50 as Unified Patent Court Prepares to Open In Late 2017 Today the UK Prime Minister invoked Article 50 of the Lisbon Treaty. This is expected to lead to the UK’s exit from the European Union (EU) in two years’ time. After exiting the EU, the UK will remain a member of the European Patent Convention and J A Kemp will continue to represent its clients at the European Patent Office... Read more

24 July 2017 India Introduces New Trade Mark Rules New trade mark rules have taken effect in India which have introduced a number of changes in practice. For many applicants, the main difference will be a substantial increase in official fees. However, individuals, startups and small entities will benefit from a new differential application fee which is 50% lower than that for other applicants. Other key changes include the... Read more

24 July 2017 Unwired Planet International v Huawei Technologies Co Ltd Mr Justice Birss gave an important decision on 5 April 2017 concerning FRAND undertakings. FRAND stands for ‘fair, reasonable and non-discriminatory’ and the FRAND undertaking is the undertaking a patentee has to give when declaring a patent to be essential (‘essential’ meaning that it would inevitably be infringed by operating in accordance with a given standard) to the standards setting... Read more

24 July 2017 J A Kemp Ranked as Leading Firm by IAM 1000 2018 J A Kemp has been ranked as a leading UK patent prosecution firm in “IAM Patent 1000 – The World’s Leading Professionals 2017”. The directory says that J A Kemp “responds quickly, creatively and thoroughly, and is always professional and reliable”. The directory makes the following recommendations of individual J A Kemp partners: “An authority in the pharmaceutical field, Ravi... Read more

24 July 2017 German Constitutional Court Holds up German Ratification of Unitary Patent Court Agreement It is being reported today that the German Constitutional Court has asked the German Federal President not to ratify the Unified Patent Court Agreement (UPCA) for the time being. The request is the result of a complaint (Az.:2BvR 739/17) made to the Constitutional Court by an unnamed person. Details of the complaint are somewhat unclear at present, but the Court... Read more

24 July 2017 Next Step for EU Trade Mark Regulation: Further Reforms Coming into Force Amendments to the EU Trade Mark Regulation on 23 March 2016 brought about substantial changes to the EU trade mark system. However, not all of the changes were implemented with immediate effect. With the publication of Regulation No. 2017/1001 in the EU Official Journal on 16 June 2017, we are reminded that several significant reforms will enter into force on... Read more

24 July 2017 Unwired Planet v Huawei – Mr Justice Birss Grants First FRAND Injunction, and Publishes Terms of FRAND Licence We reported on 12 May 2017 that Mr Justice Birss had given an important decision concerning FRAND undertakings. On 7 June 2017, Mr Justice Birss gave a follow-up decision dealing mainly with the FRAND licence agreed between the parties and the decision as to whether to grant Unwired Planet an injunction to restrain patent infringement by Huawei, along with some... Read more

24 July 2017 J A Kemp Wins Best UK IP Firm Award J A Kemp has won the “Best UK IP Firm” award at this year’s International Legal Alliance Summit & Awards. On 15 June the 10th anniversary of the event, held in New York, attracted over 500 delegates from all over the world. Simon Wright, a partner in J A Kemp’s Biotechnology and Life Sciences Group, collected the “Best UK IP... Read more

24 July 2017 UK Closer to Ratifying UPC Legislation Secondary legislation required to bring the Protocol on Privileges and Immunities for the Unified Patent Court into effect in the UK (The Unified Patent Court (Immunities and Privileges) Order 2017) was laid before Parliament on 26 June 2017. The protocol establishes the legal personality of the Unified Patent Court in the UK. The Order requires approval from both the House... Read more

24 July 2017 J A Kemp Ranked in Top Tier by Managing Intellectual Property J A Kemp has been ranked as a top tier trade mark firm in the 2017 edition of the IP Stars Handbook, published by Managing Intellectual Property. Tom Albertini, Tom Carver, James Fish, Mike Nicholls, Mark Roberts, Sarah Roques, Amanda Simons and Ravi Srinivasan are all listed as IP Stars. Other notable, recommended attorneys in the firm include, patent attorneys,... Read more

24 July 2017 EPO Lifts Stays of Proceedings Following Implementation of New Plant Patent-Eligibility Rules On 3 July, the EPO lifted its stays of proceedings on cases that had been held in abeyance pending new rules on the patent-eligibility of plant-related subject matter. Following an intervention by the European Commission in November 2016, as of December 2016 the EPO had stayed the prosecution of a number of plant-related applications pending a possible rule change. The... Read more

24 July 2017 UK Progress on Unitary Patent (UP) and Unified Patent Court (UPC) The UK has become the ninth state to depositthe document required to apply the Protocol on Provisional Application (PPA) which is an essential step towards formation of the UPC. Four more deposits, including that of Germany, are required for the PPA to come into force which will allow the UPC to gain legal personality and start the process of selecting... Read more

24 July 2017 Supreme Court Introduces a Doctrine of Equivalents in the UK The Supreme Court, in a judgment handed down today, determined that the claims of a UK patent may extend beyond the scope of what a skilled person would understand the language of the claims to mean. In doing so, it swept away the previous practice of the UK courts whereby a patent claim would provide only that monopoly which a... Read more

24 July 2017 Bloomberg World Intellectual Property Report – How to Use Experimental Evidence in English Patent Litigation An article written by J A Kemp partnerTom Carverentitled ‘How to Use Experimental Evidence in EnglishPatent Litigation’has been featured in Bloomberg BNA’s July issue. The article looks in detail at the valuable role that experimental evidence can play in patent litigation, exploring procedure, minimisation of risk, dealing with the other side’s experiments and other jurisdictions. Read more

24 July 2017 Lilly v Actavis – Supreme Court Introduces a Doctrine of Equivalents in the UK We recently reported the handing down of an important judgment from the UK Supreme Court on the scope of protection provided by UK patent claims. The judgment holds that the scope of protection can extend beyond the meaning of the language used in the claims, and embrace variants not covered by the claims on any normal interpretation. On the facts... Read more

10 March 2017 EPO to Provide Opinions on Patentability with Partial Search Reports The EPO has announced that, from 1 April 2017, it will issue an opinion on patentability even in cases where a partial search report is drawn up. At present, if the EPO identifies that the claims cover more than one invention, then it issues a partial search report covering the invention mentioned first in the claims and invites the applicant... Read more

14 February 2017 Italy Ratifies UPC Agreement On 10 February 2017, Italy became the twelfth Member State to deposit its ratification of the Unified Patent Court Agreement (UPCA). Ratification by Italy means that a further key European market will be covered by the UPC system. At this stage, ratification by Italy is not an essential step in bringing the UPCA into effect. The remaining States which must... Read more

9 February 2017 UPC Still on Track There have been several recent developments which indicate that the UPC is still on track to become operational within the timeframe set out by the UPC Preparatory Committee here. The intention is that the UPC will start accepting cases in December 2017 with a sunrise provision (during which opt-outs may start to be filed) starting in September 2017. At present,... Read more

2 February 2017 Does an SPC for a Biological Product Cover a Biosimilar? Guidance from Norway In December 2016 the Norwegian Court of Appeal handed down its decision in Pharmaq v Intervet, which concerns the validity of Intervet’s SPC for a viral vaccine for preventing pancreatic disease (PD) in salmonid fish. The case is of general interest in that it relates to the extent to which an SPC for a biological product may be considered to... Read more

2 February 2017 EPO Enlarged Board of Appeal Prescribes an Antidote to Poisonous Divisionals The EPO’s Enlarged Board of Appeal has just provided (here) its detailed reasoning in response the questions concerning partial priority that were posed in referral G1/15. This full decision follows on from the brief answer that was provided in November 2016 (as reported here). The central issue in this referral was the extent to which a narrow disclosure in a... Read more

30 January 2017 Cambodia Set to Allow Validation of European Patents as National Patents It has been announced that the European Patent Office (EPO) has signed an agreement with the Cambodian Ministry of Industry and Handicraft (MIH) to enable European patents to be validated in Cambodia. The agreement must still be ratified by the Cambodian government, and a tentative implementation date of 1 July 2017 has been suggested. Cambodia will not be a member... Read more

30 January 2017 Illumina, Inc. and Others v Premaitha Health PLC. Mr Justice Roth gave a decision on 16 December 2016 concerning the documents provided during litigation by the Claimants, as part of the disclosure (known as discovery in the US) procedure. During litigation in the High Court of England and Wales, each party is generally required to disclose to the other side any document in its control which could adversely... Read more

27 January 2017 High Court Refers SPC Issues to the CJEU In two judgments handed down on 13 January 2017 Mr Justice Arnold decided to send questions on the SPC Regulation to the CJEU for a preliminary ruling. In each case the question reflects the lack of clarity provided by earlier key CJEU decisions, Medeva and Neurim. For more information, please see our briefing on this topic, here. Read more

18 January 2017 J A Kemp Team Highly Recommended by World Trademark Review 1000 J A Kemp has once again been recognised as a Highly Recommended firm in this year ‘s edition of World Trademark Review 1000. The publication calls J A Kemp a go-to for UK and European trademark matters its expert practitioners provide practical advice quickly and for a fair price, and impress at every turn. The four partners heading up the... Read more

15 December 2016 Merck Sharp and Dohme Limited v Shionogi and Co Limited Mr Justice Arnold gave a decision on 25 November in the matter Merck Sharp and Dohme Limited v Shionogi & Co Limited. The case concerned EP (UK) 1 422 218 B1 which relates to the use of integrase inhibitors of a particular formula for the preparation of the pharmaceutical composition for use as an integrase inhibitor for preventing or treating... Read more

15 December 2016 Sony Communications International AB vs SSH Communications Security Corporation Roger Wyand QC, sitting as a deputy High Court Judge, gave a decision on the order for costs to be made following the trial of the action between Sony Communications International AB and SSH Communications Security Corporation. Cases with a value over Ô£10 million, as this case was, do not automatically fall within the cost budgeting rules but SSH had... Read more

13 December 2016 Design Rights in Lockers Secured We are pleased to report the successful enforcement of our client Action Storage Systems Limited ‘s UK unregistered Design Rights in their highly successful eXtreme plastic locker. The IPEC judgement, handed down by Judge Hacon on 7 December, demonstrates the power of the unregistered Design Right in restraining copying and the power of disclosure in revealing evidence of copying. Various... Read more

1 December 2016 J A Kemp Ranked Among the Top Firms for PCT filings in 2016 Managing Intellectual Property magazine has published its 2016 annual report on the top PCT filers in the major patenting jurisdictions and worldwide. J A Kemp is ranked number 9 in the UK in 2016 (up from 12 in 2015) with a total of 156 PCT applications (up from 111). With 41% growth year on year, J A Kemp is one... Read more

30 November 2016 Enlarged Board of Appeal Decision G1/15 on Partial Priority Issued The EPO ‘s Enlarged Board of Appeal has just answered (here) the questions concerning partial priority posed to it in referral G1/15. Although the reasoning of the Enlarged Board of Appeal is not yet available, it appears that the Enlarged Board has confirmed that partial priority for a claim may not be refused in respect of subject matter embraced by... Read more

28 November 2016 UK to Ratify the UPC Agreement The UK government today announced that the UK intends to ratify the UPC agreement. Following the expected ratification of the UPC by the UK, the UPC will come into effect after ratification by Germany. It is expected that the Unitary Patent and the Unified Patent Court will come into effect during 2017. European patent applicants and proprietors are encouraged to... Read more

24 November 2016 ITMA Becomes CITMA (The Chartered Institute of Trade Mark Attorneys) Today, 24 November 2016, sees the launch of The Chartered Institute of Trade Mark Attorneys (CITMA) in the UK. The Institute of Trade Mark Attorneys (ITMA) was granted a Royal Charter in April 2016, paving the way for it to become CITMA. This means that J A Kemp ‘s registered trade mark attorneys now hold the title Chartered Trade Mark... Read more

21 November 2016 Thoratec Limited v AIS GMBH Aachen Innovative Solutions Mr Justice Arnold gave a decision on 28 October in the case between Thoratec Limited v AIS GMBH Aachen Innovative Solutions relating to patents concerned with ventricular assist devices. There was no dispute as to the applicable legal principles but there were some practical points to be taken from the decision. First, there was overlap between the evidence given by... Read more

21 November 2016 Hospira UK Limited v Cubist Pharmaceuticals LLC Mr Justice Carr gave a decision on 17 October in the case Hospira UK Limited v Cubist Pharmaceuticals LLC on the question of recoverable costs. The general rule in English litigation is that the winner, Hospira in this case, is entitled to its general costs of the litigation. However, Hospira did not win all points and Cubist therefore argued that... Read more

3 November 2016 Chambers and Partners 2017 J A Kemp maintained its ranking as a leading UK patent and trade mark attorney firm in the 2017 edition of Chambers & Partners. Comments from clients included: “I am really impressed with them. The team is very proactive, strategic and thinks about the best way to move forward.” “It is an excellent firm with a truly first-rate group of... Read more

3 November 2016 UK High Court Rules that Parliament Must Vote on Whether the UK Can Start the Process of Leaving the EU Following the vote to leave the UK on 23 June earlier this year, the new UK prime minister announced that she would invoke Article 50 of the Lisbon Treaty by the end of March 2017 to begin the negotiations for the UK to leave the EU. The UK would automatically leave the EU at the end of two years after... Read more

27 October 2016 Referral to the Enlarged Board of Appeal regarding Undisclosed Disclaimers The EPO has referred three further questions on disclaimers to the Enlarged Board of Appeal. The Enlarged Board of Appeal has already considered disclaimers on two previous occasions, with decisions G1/03 and G2/03 setting out the principles by which disclaimers must be assessed. The three new questions arise from decision T437/14 and relate specifically to undisclosed disclaimers (i.e., disclaimers removing... Read more

25 October 2016 UPC Update: Judicial Appointments Delayed and Questions Directed to UK Government The Unified Patent Court (UPC) has issued a statement that recruitment of UPC judges has been delayed in view of the result of the UK referendum on EU membership. Following the referendum result, it is unclear if or when the UK ratification required at present to bring the UPC agreement into effect will take place. As a result, the judicial... Read more

24 October 2016 Simplified Post-Grant Validation of European Patents in Belgium from 1 January 2017 Legislation has recently been passed in Belgium which removes the requirement to file a translation of a European patent that is granted in English. Currently, it is necessary to file a translation (into French, German or Dutch) of the entire European patent specification in order to validate an English-language European patent in Belgium. This has made validation in Belgium relatively... Read more

19 October 2016 Bloomberg World Intellectual Property Report – UK Extends Copyright Terms for Artistic Works An article written by J A Kemp partners Alan Bryson and Tom Carver on the subject of UK extension of copyright terms for artistic works has been featured in Bloomberg BNA’s October issue. The article looks in detail at the impact that the recent repealing of Section 52 will have and explores what constitutes a work of artistic craftsmanship according... Read more

19 September 2016 J A Kemp Retains Top Tier Ranking in The Legal 500 J A Kemp, the leading UK and European patent and trade mark attorney firm, has retained its top tier ranking in The Legal 500, with seven of its partners also being recommended. Commenting on the rankings the directory noted that the firm had expanded its national reach in February 2016 with the opening of a Cambridge office. Office head, Andy... Read more

15 September 2016 The Netherlands Becomes the 11th State to Ratify the Agreement on the Unified Patent Court (UPCA) On 14 September 2016, the Netherlands announced itself as the 11th state to complete ratification of the Agreement on the Unified Patent Court (UPCA). Germany and the UK are now the only remaining states that are required to ratify the UPCA in order for the Agreement to come into effect. The UPCA will come into effect on the first day... Read more

14 September 2016 J A Kemp Partner Tom Carver Speaking at the Patent Information Annual Conference of China (PIAC) 2016 J A Kemp Partner and Solicitor Tom Carver will be speaking at the Patent Information Annual Conference of China (PIAC) 2016, which is being held this year in Beijing on 19-20 September. Tom is chairing a breakout session titled New Forms of Patent Monetization; Part 2 Europe: Next Main Venue for Patent Transactions? in the morning session on Tuesday 20... Read more

12 September 2016 Trade Mark and Designs Considerations Following the UK’s EU Referendum The referendum vote to leave the European Union (EU) does not bring about any immediate changes to IP law. EU trade mark (TM) registrations and EU registered designs remain in force in the UK. This will continue at least until the moment that the UK leaves the EU. At that point, new laws that have not yet been devised are... Read more

23 August 2016 High Court of England and Wales Upholds Dosage-Regime Patent The case of Teva v ICOS concerns the validity and infringement of two patents for tadalafil, and gives a good example of how the Court applies the fair expectation of success ‘ test for inventive step. If something is obvious to test in a research program with a fair expectation of success then it will likely be found to be... Read more

8 July 2016 Recent EPO Decision Puts Pendency of Some Applications in Doubt Renewal fees are due to the European Patent Office (EPO) on pending European patent application for the third and each subsequent year. If a renewal fee payment is not paid in due time at European Patent Office, the fee may still be paid within six months of the due date, provided that an additional fee is also paid within that... Read more

7 June 2016 Guidance Relating to Calculating Unified Patent Court (UPC) Fees The UPC has recently issued Updated FAQs on Court fees. In particular these provide guidance on how the value of a case is to be assessed for the purpose of determining value based fees and the ceiling of recoverable costs. Read more

7 June 2016 Bulgaria Becomes the Tenth State to Ratify the Agreement on the Unified Patent Court (UPCA) As of 3 June 2016, Bulgaria has become the tenth EU member state to ratify the Agreement on the Unified Patent Court (UPCA). Now it remains for the UK, Germany and a thirteenth EU member state to ratify the UPCA. The UPCA will come into effect on the first day of the fourth month after the remaining required ratifications have... Read more

2 June 2016 J A Kemp Praised by the IAM 1000 2016 J A Kemp has been ranked as a leading UK patent prosecution firm in the 2016 edition of IAM Patent 1000. The directory describes the firm a “prosecution powerhouse” and comments that “J A Kemp remains firmly on the ascendant”. Clients remark that the firm is “extremely knowledgeable and routinely does a fantastic job.” The directory recommended the following J... Read more

24 May 2016 Unified Patent Court (UPC) issues draft Code of Conduct Following consultation with the Institute of Professional Representatives before the European Patent Office (epi) and other professional bodies including the UK Chartered Institute of Patent Attorneys (CIPA), a draft Code of Conduct for representatives who appear before the UPC has been published. The document sets out the general principles under which dealings with the UPC should be conducted. This is... Read more

28 April 2016 The Institute of Trade Mark Attorneys is Granted a Royal Charter The application by the United Kingdom ‘s Institute of Trade Mark Attorneys (ITMA) for Chartered ‘ status has been given royal approval after it was granted a Royal Charter by The Queen this month. The announcement paves the way for ITMA to become the Chartered Institute of Trade Mark Attorneys (CITMA) and for Registered Trade Mark Attorneys who are members... Read more

3 March 2016 UK Parliament approves UPC legislation The UK Parliament has now given approval to secondary legislation introducing changes to the UK Patents Act to implement the Agreement on a Unified Patent Court (UPC) and EU Regulation establishing the European Patent with Unitary Effect (EPUE). The draft secondary legislation previously prepared by the UK Intellectual Property Office following conclusion of a public consultation can be found here,... Read more

29 February 2016 Opt-out Fee Scrapped by UPC Preparatory Committee The UPC preparatory committee today published the rules on the court fees and recoverable costs for the UPC (Unified Patent Court). They can be found here. It will be of particular interest to many current proprietors of European patents, who wish to avoid the jurisdiction of the UPC, that the preparatory committee has abandoned the proposal for an opt-out fee.... Read more

26 February 2016 EPO Announces Publication of Three Millionth Patent Specification! The EPO has announced the publication of EP 3,000,000. The EPO opened for business at the end of 1977, and received just 4,000 European patent applications in its first full year. These first European patent applications covered only 7 countries. Since then, the project has been a resounding success, with the number of applications filed each year rapidly increasing to... Read more

15 February 2016 Locations of the European Union ‘s Unitary Patent Court (UPC) The UPC ‘s website has been updated to show the location of several confirmed UPC divisions (here). This site shows (with photos) the locations of: – the Court of Appeal in Luxembourg; – the Nordic-Baltic Regional Division in Stockholm, Sweden; – the German Central Division and one of the German Local Divisions in Munich; and – the three other German... Read more

15 February 2016 J A Kemp Opens its Doors in Cambridge J A Kemp opens its new Cambridge office today, 15 February 2016. The office is at 30 Station Road, in the thriving business district surrounding Cambridge railway station. The firm will now have a convenient base from which to continue to provide its range of patent, trade mark and design services to a growing list of businesses in the Cambridge... Read more

4 February 2016 J A Kemp Shortlisted for Trade Mark Prosecution Firm of the Year J A Kemp has been shortlisted in the category of UK Firm of the Year for Trade Mark Prosecution in the MIP (Managing Intellectual Property) Global Awards. The awards recognise outstanding firms across Europe, Asia Pacific and Latin America. The winners will be announced on 10 March. Full details of Global Award nominations can be found here. Read more

20 January 2016 Finland Becomes the Ninth State to Ratify the Agreement on the European Union’s (EU’s) Unitary Patent Court (UPC) The agreement on the UPC was signed on 19 February 2013 by all of the EU ‘s member states, except Croatia, Poland and Spain. Finland became the ninth state (after Austria, France, Sweden, Belgium, Denmark, Malta, Luxembourg and Portugal) to ratify the agreement on 19 January 2016 (see here). The UPC preparatory committee is aiming to complete its work on... Read more

18 January 2016 The UK Government Takes Another Step Towards Ratification of the Unified Patent Court (UPC) Agreement The UK Government has concluded its consultation on the secondary legislation implementing the Agreement on a Unified Patent Court (UPC) and EU Regulations establishing the European Patent with Unitary Effect (EPUE). The UK Intellectual Property Office (UK IPO) ran a technical review and call for evidence between 10 June 2014 and 2 September 2014 on draft secondary legislation which proposed... Read more

18 January 2016 J A Kemp ‘s Team Recognised by World Trademark Review 1000 2016 J A Kemp has once again been recognised as a leading firm of trade mark practitioners by World Trademark Review 1000. All four of J A Kemp ‘s trade mark partners have also been ranked. The firm received a silver ranking, as did practice head James Fish and partner Ben Mooneapillay. Two other Partners, Tom Albertini and Charlotte Stirling, received... Read more

11 January 2016 J A Kemp Patent and Trade Mark Attorneys to Open Office in Cambridge J A Kemp has announced that it will open an office in Cambridge in February 2016. Ranked in tier 1 by The Legal 500 and Chambers and Partners, J A Kemp is one of the largest UK and European patent and trade mark attorney firms. The firm ‘s strong international presence is complemented by a UK practice that has nearly... Read more

23 November 2015 The Member States Participating in the European Patent with Unitary Effect (EPUE) Agree the Distribution of Revenue from EPUE Renewal Fees We reported in June 2015 that the Select Committee of the Administrative Council of the European Patent Office (EPO) endorsed the so-called True Top 4 proposal tabled by the EPO on renewal fees applicable to the European Patent with Unitary Effect (EPUE) (see here). This essentially means that the renewal fees for the EPUE will be the equivalent to the... Read more

13 November 2015 Company Scamming UK Intellectual Property Office Customers Found Liable for Trade Mark Infringement and Passing Off The UK Intellectual Property Office (UK IPO), the European Patent Office (EPO) and World Intellectual Property Organization (WIPO) continue to receive reports of applicants and proprietors being approached for payment by firms fraudulently offering to perform official processing, such as registering patents and publishing patent applications. These so-called scammers often use names, abbreviations and/or logos which are confusingly similar to... Read more

10 November 2015 CJEU Decision on Geographical Extent of CTM Reputation On 3 September 2015 the CJEU issued its Decision in Case C-125/14. The Decision answered questions referred from the Hungarian Intellectual Property Office seeking to clarify, in particular, the geographical extent of reputation required for CTMs to constitute a reputation in the Community. For more information please see our briefing on the topic. This briefing looks at the CJEU ‘s... Read more

4 November 2015 The Unified Patent Court (UPC) Preparatory Committee Adopts the Rules of Procedure of the UPC At its last meeting on 19 October 2015, the UPC preparatory committee adopted the rules of procedure of the UPC, subject to some further adaptations once the committee has decided on the court fees. This represents a significant milestone in the progress of the UPC because the rules underpin the court ‘s framework and functioning. The agreed rules are the... Read more

30 October 2015 J A Kemp Ranked in Band One in Chambers and Partners 2016 UK Directory J A Kemp has been ranked as a Band One firm of patent and trade mark attorneys by Chambers and Partners. They commented on the firm ‘s impressive range of expertise and experience across the entire scientific spectrum and its formidable contentious offering and also said that the firm had one of the most sophisticated biotech practices in the country.... Read more

15 October 2015 Announcement on Early Application of Parts of the UPC Agreement On 1 October 2015, representatives of member states party to the agreement on a Unified Patent Court (UPC) signed a protocol allowing for the provisional application of certain aspects of the court agreement. The protocol enables the early application of certain provisions necessary for the operation of the UPC, such as the setting up of IT infrastructure and the recruitment... Read more

8 October 2015 Moldova to Allow Validation of European Patents as National Patents It has been announced that it will be possible, from 1 November 2015, to validate European patents in Moldova. This development marks the culmination of an agreement between the European Patent Office (EPO) and State Agency of Intellectual Property of the Republic of Moldova (AGEPI) first signed in June 2014. Moldova will not be a member of the EPC, nor... Read more

1 October 2015 Italy Joins the European Union’s (EU’s) Unitary Patent Yesterday, Italy joined the EU’s unitary patent and so became the 26th member of the enhanced cooperation on unitary patent protection. The unitary patent will enter into force at the same time as the EU’s unified patent court (UPC). The agreement on the UPC was signed on 19 February 2013 by all of the EU’s member states, except Croatia, Poland... Read more

16 September 2015 J A Kemp Retains its First Tier Ranking as a Patent and Trade Mark Firm in The Legal 500 2015 J A Kemp has retained its ranking as a first tier firm for both patents and trade marks in the 2015 edition of The Legal 500. J A Kemp’s patent team was described as having notable experience in patent oppositions and appeals before the EPO. The firm ‘s trade mark team was commended for technical advice of a very high... Read more

11 September 2015 Warner-Lambert Loses at First-Instance in the Pregabalin Dispute 2015 has seen a series of preliminary judgments from the High Court and one from the Court of Appeal concerning a dispute between Actavis and Warner-Lambert (part of the Pfizer group) over the drug pregabalin. Warner-Lambert sought to enforce against Actavis a patent with a Swiss-style second medical use claim directed to the use of pregabalin in treating pain. This... Read more

7 September 2015 OHIM Cooperation Fund User Association Meeting Trade Mark Partner James Fish will be attending a User Association meeting of OHIM ‘s Cooperation Fund before OHIM ‘s Liaison Office in Brussels on 8 September 2015 on behalf of FICPI. Read more